Scheduled Airlines Traffic Offices, Inc. v. Mohammad Yasir Naseem c/o Dynadot Privacy
Claim Number: FA1504001615745
Complainant is Scheduled Airlines Traffic Offices, Inc. (“Complainant”), represented by Travis Bachman, Minnesota, USA. Respondent is Mohammad Yasir Naseem c/o Dynadot Privacy (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <satotravel.org>, registered with Dynadot, LLC (R1266-LROR).
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 22, 2015; the Forum received payment on April 22, 2015.
On Apr 22, 2015, Dynadot, LLC (R1266-LROR) confirmed by e-mail to the Forum that the <satotravel.org> domain name is registered with Dynadot, LLC (R1266-LROR) and that Respondent is the current registrant of the name. Dynadot, LLC (R1266-LROR) has verified that Respondent is bound by the Dynadot, LLC (R1266-LROR) registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On April 24, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 14, 2015 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@satotravel.org. Also on April 24, 2015, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On May 26, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
(i) Complainant has registered the SATOTRAVEL mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,690,293, registered Feb. 25, 2003). The mark is used on or in connection with the sale of travel agency services, particularly for military personnel. The disputed domain name is confusingly similar to Complainant’s SATOTRAVEL mark, because Complainant has simply attached the generic top-level domain (“gTLD”) “.org.”
(ii) Respondent has no rights or legitimate interests. Respondent is not commonly known as the domain name, nor is Respondent a licensee of Complainant. Further, the domain name resolves to a webpage with competing links, and Respondent is trying to pass itself off as Complainant.
(iii) Respondent has engaged in bad faith registration and use. Respondent’s actions disrupt Complainant’s business. Respondent is attempting to commercially profit from a likelihood of confusion. Respondent was on actual notice of Complainant’s trademark rights when it registered the disputed domain name.
B. Respondent
Respondent did not submit a Response in this proceeding. The disputed domain name <satotravel.org> was registered on October 14, 2009.
Complainant established that it had rights in the mark contained in the disputed domain name. Disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent registered and used the disputed domain name in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant has registered the SATOTRAVEL mark with the USPTO (e.g., Reg. No. 2,690,293, registered Feb. 25, 2003). The mark is used on or in connection with the sale of travel agency services, particularly for military personnel. The Panel finds that registration with the USPTO is sufficient to establish rights in a trademark pursuant to Policy ¶ 4(a)(i). See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”).
Complainant argues that the <satotravel.org> domain name is identical to the SATOTRAVEL mark. Complainant notes that the only way in which the domain name differs from the mark is the addition of the gTLD “.org.” As a general rule, a gTLD can never distinguish a domain name from the mark at issue. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Therefore, the Panel finds that the disputed domain name is identical to the mark according to Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant asserts that Respondent is not commonly known as the disputed domain name, nor is Respondent in possession of licensing rights that would allow him to use the SATOTRAVEL mark in domain names. The Panel notes that “Mohammad Yasir Naseem c/o Dynadot Privacy” is listed as the registrant of record for the disputed domain name. The Panel also notes that the record is void of any evidence to indicate that Respondent is either commonly known as the disputed domain name or in possession of licensing rights. Where such a void exists, Respondent cannot have rights or legitimate interests under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant also argues that Respondent’s use of the disputed domain name fails to consist of a bona fide offering of goods or services or a legitimate noncommercial or fair use. To support this claim, Complainant notes that the resolving webpage contains links to competing services. See Compl., at Attached Ex. G. Prior panels have found that use of a confusingly similar domain to post competing hyperlinks cannot consist of a bona fide offering of goods or services or a legitimate noncommercial or fair use. See United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007) (“The disputed domain name, <usaa-insurance.net>, currently resolves to a website displaying Complainant’s marks and contains links to Complainant’s competitors. The Panel finds this to be neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Thus, the Panel finds that Respondent does not have rights under Policy ¶¶ 4(c)(i) or (iii).
Complainant also argues that Respondent is attempting to pass itself off as Complainant. To support this claim, Complainant notes that the resolving webpage mentions “CWT Sato Travel,” which happens to be the same title as the <cwtsatotravel.com> domain name for which Complainant is the registrant. See Compl., at Attached Ex. G. Complainant also notes that the resolving webpage also contains links to Complainant’s own information. See Id. Prior panels have declined to award the respondent rights under Policy ¶ 4(a)(ii) where the respondent is attempting to pass itself off as the complainant. See MO Media LLC v. NeXt Age Technologies LTD, FA 220031 (Nat. Arb. Forum Feb. 18, 2004) (finding the respondent lacked rights and legitimate interests in the disputed domain name when the respondent copied the complainant’s websites in their entirety at the disputed domain names). As the Panel finds that Respondent is trying to pass itself off as Complainant, it declines to award Respondent rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).
Complainant argues that Respondent has engaged in bad faith registration and use. First, Complainant notes that Respondent is using the disputed domain name to divert Internet users to Complainant’s competitors. Complainant believes that such behavior is disrupting its business. Generally, Panels have agreed with this position. See Univ. of Texas Sys. v. Smith, FA 1195696 (Nat. Arb. Forum July 7, 2008) (finding that using the resolving website to divert Internet users to the complainant’s competitors constituted bad faith registration and use under Policy ¶ 4(b)(iii)). Consequently, the Panel finds that Respondent is acting in bad faith under Policy ¶ 4(b)(iii).
Next, Complainant argues that Respondent has displayed bad faith under Policy ¶ 4(b)(iv) by attempting to commercially profit from a likelihood of confusion. To support its claim for likelihood of confusion, Complainant contends that in trying to pass itself off as Complainant, Respondent has created a situation where Internet users who view the resolving webpage will believe it is sponsored by or affiliated with Complainant. Also, Respondent is commercially profiting in the process through the acquisition of pay-per-click fees. Prior panels have found that use of a domain name that creates a likelihood of confusion for commercial profit consists of bad faith. See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting). As the Panel finds that Respondent has created a likelihood of confusion for commercial profit, it finds bad faith under Policy ¶ 4(b)(iv).
Lastly, Complainant also contends that in light of the fame and notoriety of Complainant's SATOTRAVEL mark, it is inconceivable that Respondent could have registered the disputed domain name without actual and/or constructive knowledge of Complainant's rights in the mark. The Panel here finds that any arguments of bad faith based on constructive notice are irrelevant, however, because UDRP case precedent declines to find bad faith as a result of constructive knowledge. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."). However, the Panel agrees with Complainant due to the fame and notoriety of Complainant’s mark as well as the manner of use of the disputed domain name by Respondent that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and finds that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <satotravel.org> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: June 3, 2015
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